For many business owners, inventors and researchers, this is good news. After all, the last major IP law changes came with the Trade Mark Act in 1995, when the internet was in its infancy and an app was just an abbreviation. A lot has changed.
In 2008, the Federal Government reviewed Australia’s national innovation strategy for the 21st century , which highlighted concerns around the strength of our IP laws.
The current Intellectual Property Laws Amendment Act 2012 – aptly tagged the “Raising the Bar” Act – addresses many of these.
The amendments affect all the major IP Acts – for patents, trade marks, designs and copyright. Some of the changes will effectively raise the standard and quality of patents to align closely with international standards.
Others alter the Customs seizure process, making it easier for trade mark and copyright owners to enforce their rights against illegal imports.
While the most significant changes are outlined briefly here, for comprehensive advice on the changes and their long-term impact, you should consult an IP professional.
Patents and inventions
A word of timely advice for those out there with an invention or innovation that requires protection; now is the best time to ensure a complete patent application is in place and a request for examination is filed by 12 April 2013.
After this date, patents will be harder to obtain as the changes will raise the requirements of ‘inventiveness’ and how the invention is specified. The standards for assessing patent applications will also be stepped up.
This is not a bad thing at the end of the day, and changes to simplify procedures and reduce delays in processing have also been introduced, which will benefit applicants.
For a useful list of ways to prepare for the changes, plug ‘12 ways patent applicants should prepare’ into your search bar.
Manufacturing and research
The good news continues for manufacturers, universities and research facilities, like Westmead Millenium Institute, with the introduction of an ‘experimental use’ exemption for patents.
Currently, a patent owner has a monopoly right to prevent unauthorised use of the invention, including for research.
The ‘experimental use’ exemption will formally provide certainty for researchers and manufacturers across all fields of technology including genetic, biotech and pharmaceutical research, allowing them to operate free from fear of delay or infringement.
Customs seizure of counterfeit goods
For business owners dealing with imported goods that infringe on their registered copyrights or trade marks, changes will come into effect in April 2014 that make identifying and enforcing their rights easier.
Providing the importer wants the seized goods back, these IP rights owners will have access to information about the importer without the need to apply for a court order. This should make it considerably easier and faster to commence legal proceedings and defend IP rights.
Opposition to a trade mark application
The current timing and procedure requirements surrounding an opposition to a trade mark application will also be stepped up with the new laws.
If you apply for a particular trade mark but registration is opposed by a third party, the opposing party has to submit a detailed statement to outline the grounds of their opposition within one month, otherwise the opposition will be dismissed. Other timelines have also been tightened up to speed up the opposition process considerably.
There are, of course, many other changes included in the Raising the Bar Act, and overall those changes will bring a more robust framework to support and encourage innovation of local business owners by providing higher quality IP protection in a more timely manner.
Damon Henshaw is lead partner of the Parramatta office of Davies Collison Cave. Email: dhenshaw@davies.com.au.
